240 U.S.

179
36 S.Ct. 288
60 L.Ed. 590

ISADOR STRAUS and Nathan Straus, Trading and Doing

Business under the Firm Name and Style of R. H. Macy &
Company, Petitioners,
v.
NOTASEME HOSIERY COMPANY.
No. 184.
Argued January 17 and 18, 1916.
Decided February 21, 1916.

Mr. Edmond E. Wise for petitioners.

Messrs. E. Hayward Fairbanks and James H. Griffin for respondent.
Mr. Justice Holmes delivered the opinion of the court:

This is a bill in equity brought by the Notaseme Hosiery Company to restrain

infringement of a registered trademark and unfair competition alleged to have
been practised by the petitioners, and to recover damages and profits. The
plaintiff's trademark, as registered, was a rectangle with a black band running
from the left hand upper to the right hand lower corner, the upper and lower
panels on the two sides of the band being printed in red. As used, it contained
the word 'Notaseme' in white script upon the black band, with the words 'Trade
Mark' in small letters upon the white, and beneath the label was printed 'Reg.
U. S. Pat. Office.' In fact registration had been refused to the label with the
word 'Notaseme' upon it, that word being merely a corrupted description of the
seamless hosiery sold. The defendants, among other items of a large retail
business in New York, sold hose with seams, which they advertised under the
name 'Irontex.' After this name had been adopted, in pursuance of their request
designs were submitted to them and one was chosen. It turned out that this was
made by the printer who had made the Notaseme label. It also was a rectangle
with a diagonal black band and red panels, the band in this case running from
the right hand upper corner to the left hand lower, and having the word 'Irontex'
in white script upon the band and 'The hose thatwears like iron' printed in

black upon the two triangles of red. The defendants never had seen or heard of
the plaintiff, its label or its goods, until November, 1909, when they were
notified by the plaintiff that they were infringing its registered trademark. They
ultimately stood upon their rights.
2

At the original hearing in the circuit court it was held that the plaintiff had
embodied such a misrepresentation in the trademark as used that it would not be
protected, and that unfair dealing was not made out. This decision was reversed
by the circuit court of appeals on the ground that although the evidence did not
show actual deception, the label used by the defendants so far resembled the
plaintiff's that it would have deception as its natural result, and that the plaintiff
was entitled to relief whether the trademark on its label was good or bad as
such. 119 C. C. A. 134, 201 Fed. 99. The plaintiff was allowed to recover
profits from a reasonable time after the defendants had notice of the similarity
of the two designs, which was put at January 1, 1910. 209 Fed. 495, 131 C. C.
A. 503, 215 Fed. 361.

We agree with the circuit court that the plaintiff is not in a position to recover
for an infringement of a registered trademark. The mark that it used held out to
the public as registered in the Patent Office precisely the element that had been
rejected there. It affirmed that the authority of the United States had sanctioned
that for which that authority had been refused, and by grasping at too much lost
all, so far as this case is concerned. Holzapfel's Compositions Co. v. Rahtjen's
American Composition Co. 183 U. S. 1, 8, 46 L. ed. 49, 53, 22 Sup. Ct. Rep. 6.
The liability of the defendant must be derived from unfair competition if it
exists.

That it was unfair to continue the use of a label so similar in general character to
the plaintiff's we are not disposed to deny. But it does not follow that the
defendants are chargeable with profits as a matter of course. Very possibly the
statutory rule for wrongful use of a trademark may be extended by analogy to
unfair competition in a proper case. But, as the ground of recovery in the latter
instance is that the defendant has taken some undue advantage of the plaintiff's
reputation, or that of his goods, and as the nature and extent of the wrong may
vary indefinitely, it cannot be assumed in all cases that the defendant's sales
were due to that alone.

Ordinarily imitation is enough to imply that the matter imitated is important, at

least, to the sale of the goods. But when the similarity arises as the one before
us did, it indicates nothing, except perhaps the poverty of the designer's
invention. Furthermore the defendants' persistence in their use of the design
after notice proves little or nothing against them. They had been advertising

their goods by name and using the design in connection with the name. The
natural interpretation is not that they wanted to steal the plaintiff's good will, of
which they then learned for the first time, but that they wished to preserve their
own. When they stood upon their rights of course they made themselves
responsible for the continued use of a label that might be held likely to deceive,
and if it should be held manifestly to have that tendency, they would be
chargeable for what, in contemplation of law, was an intentional wrong, or a
fraud, although the case is wholly devoid of any indication of an actual intent to
deceive, or to steal the reputation of the plaintiff's goods. If the defendants'
conduct was a wrong, as we have assumed, it was a wrong knowingly
committed, but no further inference against the defendants can be drawn from
the fact.
6

It seems a strong thing to give relief on the ground of unfair competition when
the supposed unfairness consists mainly in the imitation of a device that sought,
obtained, and lost protection as a trademark. If a would-be trademark loses its
protection as such, that means that the public has a right to use it, and it would
be strange to bring the protection back simply by giving it another name. If the
red square with the diagonal black band is not a trademark, it would seem to be
free to the world. See Flagg Mfg. Co. v. Holway, 178 Mass. 83, 91, 59 N. E.
667. Saxlehner v. Wagner, 216 U. S. 375, 380, 381, 54 L. ed. 525, 527, 528, 30
Sup. Ct. Rep. 298. We assume that, coupled with the script upon the band,
there is sufficient pictorial similarity to deceive some persons, but, unless we go
considerably farther, to charge the defendants with all the profits would be
unjust.

The question remains whether the petitioners' sales probably were induced to
any large extent by confusion in the mind of the public between the petitioners'
goods and the plaintiff's. The goods were different in character, were called by
a different name, were sold mainly in different places and by parties not likely
to be mistaken for each other. The petitioners had advertised them as Irontex
since April, 1908. Their business was that of retailers in the city of New York,
where they were widely known. The Notaseme Company's business was
wholesale, from Philadelphia, starting with New England and the South. So far
as purchasers bought because the petitioners recommended the goods, or on the
strength of the name, by whatever recommended, as distinguished from the
colors and figures of the label, or from knowledge of the specific article, or
from preference for full fashioned over seamless hose, or for any reason but the
inducement of the red square, bar, and script supposed to indicate the plaintiff's
hose, the plaintiff has no claim on the petitioners' profits.

There is some indication that the plaintiff's business was mainly in hosiery for

men, while Macy & Company's was more than three quarters for women and
children. That the name, which the defendants do not imitate, but, on the
contrary, exclude by using another wholly unlike it, was thought more
important by the plaintiff than it now is willing to admit, is shown not only by
the use of it upon the trademark proper, but by the adoption of a new name for
the plaintiff company to conform to it. Taking all these considerations into
account, coupled with the absence of evidence that any deceit or substitution
was accomplished in fact, we find it impossible to believe that any considerable
part of the petitioner's business was due to their goods being supposed to be the
plaintiff's hose. The petitioners properly were enjoined from further use of the
mark in controversy, but, so far as the decree charged them with profits, it is
reversed.
9

Decree reversed.

10

Mr. Justice McKenna and Mr. Justice Pitney dissent.